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Correcting Owner Details to Avoid Being Void Ab Initio

Posted by James Juo | Apr 25, 2023 | 0 Comments

A use-based trademark application filed under Section 1(a) of the Trademark Act, 15 U.S.C § 1051(a), must be filed by the owner of the mark. Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1303 (TTAB 2015) (“Only the owner of the mark may file an application.”).

If the applicant for a use-based application was not the owner of the mark, then the underlying application is void ab initio. Trademark Rule 2.71(d), 37 C.F.R. § 2.71(d) (“An application filed in the name of an entity that did not own the mark as of the filing date of the application is void.”); Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017) (registration by one who did not own mark at time of filing renders underlying application void ab initio).

Correcting, But Not Substituting, Owner

A trademark application cannot be corrected by amendment or assignment to substitute the correct owner as the applicant. Trademark Rule 2.71(d). See In re Tong Yang Cement Corp., 19 USPQ2d 1689, 1691 (TTAB 1991) (where legal entity named as applicant was not owner of mark, amendment to name of owner not allowed).

But, where a use-based application is filed by the owner of the mark, the Trademark Act and Rules allow for correction of certain mistakes in the manner or form in which the owner's name is set out in the application or resulting registration. Trademark Act § 7(h), 15 U.S.C. § 1057(h); Trademark Rule 2.71(d); In re Atlanta Blue Print Co., 19 USPQ2d 1078, 1079 (Comm'r Pats. 1990) (registrant permitted to correct name from trade name to legal corporate name); see also TMEP §§ 1201.02(c), 1604.07(f) and 1609.10(b).

To correct such an error, the owner must explain how the error occurred and provide a showing that the error occurred in good faith. See Trademark Rule 2.175(b)(1). See also TMEP § 1609.10(b). Corrections are not limited solely to allowing an applicant to correct the mistake during the pendency of the application. See, e.g., Trademark Rules 2.71(d) and 2.175(a) and (b)(1), 37 C.F.R. §§ 2.71(d) and 2.175(a) and (b)(1) (applicant may amend application, or registrant may correct mistake in registration which occurred in good faith through fault of owner).

Misidentification of Entity Details Can Be Corrected

An example of a permissible correction to an applicant's name is if the named applicant did not exist as of the application filing date. See Accu Personnel, Inc. v. Accustaff, Inc., 38 USPQ2d 1443, 1446 (TTAB 1996) (holding application filed in name of non-existent entity not void ab initio so long as application filed by correct person). 10 Such a correction requires a showing that the applicant be the same, single commercial enterprise that filed and owned the mark at the time of filing the application. Argo & Co. v. Springer, 198 USPQ 626, 635 (TTAB 1978) (holding that application may be amended to name three individuals as joint applicants in place of originally named corporate applicant which was never legally incorporated, because individuals and non-existent corporation were found to be same, single commercial enterprise); U.S. Pioneer Elec. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm'r Pats. 1974) (finding applicant's name may be corrected where application was mistakenly filed in name of fictitious and non-existent party). See also TMEP §§ 1201.02(c) and 1609.10(b).

But if no attempt is made to correct the misidentification of the named applicant before the TTAB renders a decision, then a court may find the application void ab initio. Huang v. Tzu Wei Chen Food Co. Ltd., 849 F.2d 1458 (Fed. Cir. 1988) (affirming TTAB decision that trademark application was void ab initio where the applicant Chien Ming Huang was not the owner of the mark on the filing date and “there has been no attempt at correction”).

Doing Business As Fatbear Scooters

In Phat Scooters, Inc. v. Fatbear Scooters, LLC, Isaac Ashkenazie and Isaac D. Ashkenazie d/b/a Fatbear Scooters, Cancellation No. 92078878, 2023 USPQ2d 486 (TTAB Apr. 21, 2023), Fatbear Scooters, LLC was a non-existent entity at the time the underlying trademark application was filed and when its registration issued.

The record included a declaration averring that the true owners of the mark at all times were two cousins (“the Ashkenazie cousins”) d/b/a Fatbear Scooters. The Ashkenazie cousins are now the co-owners of Fatbear Scooters, LLC, a New Jersey limited liability company.

Fatbear Scooters, LLC, was identified as the owner of the mark, but did not exist at the time the application was filed. However, Fatbear Scooters, LLC is “merely a later manifestation of the same, single commercial enterprise which filed the application.” Accu Personnel, 38 USPQ2d at 1445.

The same single commercial enterprise operated by the Ashkenazie cousins has owned the mark, the application, and the resulting registration the entire time, and the misidentification of the commercial business as a New Jersey limited liability company is a correctable mistake. See id. at 1446. Compare Great Seats, Ltd. v. Great Seats, Inc., 84 USPQ2d 1235, 1244 (TTAB 2007) (application void ab initio where two separate commercial entities were in existence on application filing date and application was filed in name of wrong existing entity).

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[W]hen the Board has jurisdiction over the registration, any request to correct the registration must be filed with the Board. To effect the amendment, a registrant in a Board proceeding is strongly encouraged to file a request to correct its registration via the Board's Electronic System for Trademark Trials and Appeals (ESTTA). . . .

But the TTAB exercised its discretion to consider correction of the registration when the issue was raised in a motion for summary judgment.

          The Board finds Isaac Ashkenazie's affidavit establishes that the entity named in the underlying application (Fatbear Scooters, LLC) did not exist at the time of filing, but that chain of title in the same, single commercial enterprise did exist between it and the Ashkenazie cousins (d/b/a Fatbear Scooters). This evidence is sufficient to correct the misidentification of Respondent made upon filing the underlying application, and to also demonstrate that the error was inadvertent, made in good faith, and has been formalized through the filing and issuance of the limited liability certificate.

In order for this correction to be effective, however, the required fee for the correction must be paid, “failing which the correction will not be entered and Respondent's registration may be considered void.”

[T]he misidentification has been corrected through the affidavit submitted by Mr. Ashkenazie, and will be entered upon payment of the proper fee. The underlying application was filed by the owner of the mark, and the registration issued in the name of the limited liability company as the owner of the mark as the same continuing commercial enterprise. See Accu Personnel, 38 USPQ2d at 1446.

The TTAB gave 30 days “to submit the required fee for entry of the correction to the owner of the registration.”

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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